In an appeal against the order of the Assistant Controller of Patents and Designs, in Kamterter Products LLC vs Controller of Patents (IPDPTA/77/2023), the Calcutta High Court found that the refusal of the patent under Section 15 of the Patents Act, 1970 was not supported by reasons which is clear violation of principles of natural justice. Setting aside the rejection of the seed testing patent application filed by Kamterter Products LLC, the Court reiterated the need for reasoned orders whenever a patent is rejected. In this case, the Court found that there had been no expression on the merits of the case in the refusal order of the Controller, and the Court remanded the case back for reconsideration of all issues in accordance with the law.
Case of the Appellant
Kamterter Products LLC (the appellant) filed a patent application for Seed Testing Method and Apparatus (IN 1044/KOLNP/2010). The appellant submitted that they have applied for a patent for a novel seed testing method and apparatus. They submitted that the claimed invention pertains to a method of performing a seed test for measuring the viability and vigor characteristics of seeds exposed to a stress-inducing atmosphere, wherein the stress-inducing atmosphere comprises the level of moisture, the level of oxygen, and the temperature of early spring soil. They further enumerated that the steps involved in this method are
- “Placing a moisture-soaked material into a sealable compartment;
- Inserting a sample of the seeds into the sealable compartment;
- Removing oxygen from said compartment until the stress level of oxygen is reached by placing a pack comprising an oxygen-scavenging material in the sealable compartment in the said compartment;
- Exposing the sealable compartment to a cold temperature, wherein the cold temperature is the stress-inducing temperature of early spring soil;
- Exposing said seeds to the stress-inducing atmosphere for a conditioning period;
- Removing the seeds from the stress-inducing atmosphere;
- Deterring the proportion of seedlings that develop normally from het seeds exposed to the stress-inducing atmosphere; wherein an indication of the viability and vigor characteristics of the seeds after exposure to the stress-inducing atmosphere is obtained based on the said proportion of normal seedlings that develop from the seeds.”
The appellant submitted a detailed response to the First Examination Report (FER), and additional submissions were made after hearing on the non-applicability of exclusions under Section 3(h) as the subject matter claimed is not a method of agriculture or horticulture. However, the Controller refused their patent application under Section 3(h) without sufficient explanation.
Appellant’s Reliance on Precedents
The appellant contended that the impugned order is bereft of any reasoning and is liable to be set aside, being in violation of the principles of natural justice. The appellant relies on Decco Worldwide Post Harvest Holdings B.V. and Another vs Controller of Patents and Designs and Another (2023 SCC OnLine Cal1130), Protean Electric Ltd. vs The Controller of Patents and Designs (MANU/WB/0740/2023), Otsuka Pharmaceutical Co. Ltd. vs Controller of Patents (2022 SCC OnLine Del 4982), Dolby International AB vs Assistant Controller of Patents and Designs (2023 SCC OnLine Del 1521), Assistant Commissioner, Commercial Tax Department, Works Contract & Leasing, Kota vs M/s Shukla & Brothers (2010 SCC OnLine SC 466).
Order of the Controller
The Controller’s order for refusal simply stated that:
“Therefore based on the above facts observation in the case, the objection regarding section 3(h) of the Indian Patents Act raised in the hearing notice is still not met. Therefore, I hereby refuse the grant of patent for the instant Patent application no. 1044/KOLNP/2010 with four (04) numbers of claims.”
Decision of the Court
The Court perused the order of the Controller and found that even after considering the submissions of the appellant in detail and recording the counter arguments of the respondent, there were simply no reasons given in the impugned order. The Court observed that the refusal order should reflect that the issues and contentions raised by the parties have been adequately dealt with. The Court further observed that “there must be an element of ‘why’ to justify ‘what’. Reasons form the soul of any decision and reflect the basis on which the Controller has applied his mind.”
Setting aside the impugned order, the Court remanded the matter to the Controller with a direction “to dispose of the same within a period of two months from the date of communication of this order. It is made clear that there has been no expression on the merits of the case and all issues are left open to be decided in accordance with law.”
Takeaways for Controllers
This case once again established that the refusal of a patent application must be supported by cogent reasons, and the patent applicants are entitled to receive a reasoned decision from the Controller. In particular, the subject matter that has techno-legal implications, such as the interpretation of Section 3(h), which excludes the method of agriculture from patent eligibility, the Controller should have been more careful to pronounce the decision while weighing the merits of the case judiciously. This decision also emphasises the role of the courts in India to provide a quick judicial remedy and ensure that the patent office follows the principle of natural justice while performing its quasi-judicial functions.
Author: DPS Parmar
First Published by: Mondaq here